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In re Smith Mock Appeal Board of Patent Appeals and Interferences

In re Smith Mock Appeal Board of Patent Appeals and Interferences. AIPLA IP Practice in Japan Committee April 2008. Introduction. Welcome to the United States Patent and Trademark Office Board of Patent Appeals and Interferences (“USPTO BPAI”).

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In re Smith Mock Appeal Board of Patent Appeals and Interferences

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  1. In re SmithMock Appeal Board of Patent Appeals and Interferences AIPLA IP Practice in Japan Committee April 2008

  2. Introduction • Welcome to the United States Patent and Trademark Office Board of Patent Appeals and Interferences (“USPTO BPAI”). • Today we consider an appeal of the final rejection of a patent application for a “Pocket Insert for Bound Book” filed by Mary Smith on September 8, 1999.

  3. Introduction • Detailed USPTO Rules governing Appeal procedure (37 CFR §§ 41.30-41.54) • Includes rules governing the content, layout and format of Appeal Brief • Chapter 1200 of The Manual of Patent Examining Procedure sets forth the current procedures for appellants and patent examiners to follow in ex parte appeals. • Proposed new rules published for comment.

  4. Introduction • Appeal initiated by filing a “Notice of Appeal.” • Applicant’s then files opening brief. • Examiner then files examiner’s “Answer,” may raise new grounds of rejection. • Applicant may, optionally, file a “Reply Brief.” • Must file reply to address any new grounds of rejection.

  5. Introduction • Appeals decided by panel of three BPAI “Administrative Patent Judges” • Must “Request” a hearing. • If no Hearing Request, case is decided on briefs. • At hearing, applicant normally limited to 20 minutes. Examiner limited to 15 minutes. • Video hearing may be possible.

  6. Introduction • Appeal initiated on September 9, 2004, when Smith filed “Notice of Appeal” from “Final Rejection” of application dated June 24, 2004. • Appeal to BPAI can be filed any time after application has been rejected twice (35 U.S.C. § 134).

  7. Introduction • Today’s appeal will be heard by three judges of the BPAI • David Schnapf, Chief Administrative Patent Judge and Don Studebacker and Darryl Webster Patent Judges • Jack O’Brien, represents applicant Smith • Hung Bui is the Examiner • Naomi Voegtli is a BPAI technical assistant

  8. Introduction • Do not have to wait for “Final Rejection.” • Other options after final rejection include filing “Request for Continued Examination,” (“RCE”), or continuation application. • Commonly, patent applicants will not file appeal until they believe prosecution is at a “dead end.”

  9. Introduction • Applicant’s original “Appeal Brief” filed Nov. 2004. • Examiner “Answer” filed Jan. 25, 2005. • Applicant’s “Reply Brief” filed Mar. 16, 2005 • Appeal brief rejected by BPAI on June 17, 2005 for informalities. • Substitute Appeal Brief filed July 11, 2005.

  10. Introduction • Smith Application for a “pocket insert” which can be bound as part of a book. • The pocket insert may be used to hold computer media, such as “floppy” disks and CD ROM disks. • Claims 1 - 21 and 26 - 36 are involved in this appeal. • Claims 26 - 31 were “withdrawn.”

  11. Introduction

  12. Introduction • Claim 35 rejected under 35 U.S.C. § 102(b) as “anticipated” by Michlin (U.S. Pat. No. 5,141,252). “REJECTION 1” • Claims 1 - 9, 11 - 13, 16 - 18, and 32 - 24 rejected under 35 U.S.C. § 103(a) as “obvious” over Wyant (U.S. Pat. No. 5,540,513) in view of Dick (U.S. Pat. No. 1,495,953). “REJECTION 2”

  13. Introduction • Claims 10, 14, 15, 19 - 21 and 36 rejected under § 103(a) as “obvious” over Wyant in view of Dick, and further in view of Ruebens (U.S. Pat. No. 4,965,948). “REJECTION 3”

  14. Introduction • For REJECTION 2, applicant’s brief separately argues rejections of claims 1, 8 and 32 - therefore we consider only these three claims • For REJECTION 3, applicant’s brief separately argues the rejection of claim 36 - therefore we consider only this claim.

  15. In re Smith • Argument by Mr. O’Brien • Argument by Mr. Bui

  16. In re Smith - DECISION • Thank you counsel for your argument. • After conferring with my colleagues, we have decided to AFFIRM the rejection by the Examiner. • A formal written opinion will be published in a few weeks. • However, we will briefly explain the basis of our decision from the bench today.

  17. In re Smith - DECISION • This appeal was brought by Mary Smith (“Appellant”) under 35 U.S.C. § 134 against the final rejection of claims 1 - 21 and 23 - 36. • We have jurisdiction under 35 U.S.C. § 6(b). • Appellant claims a pocket insert for a bound book the details of which are set forth in the claims.

  18. In re Smith - DECISION • REJECTION 1 - Anticipation of claim 35. • We start by determining the scope of claim 35; and are required to give the claim its broadest reasonable interpretation. • A reference may anticipate even if a feature is not expressly shown in the reference, if the feature is inherent.

  19. In re Smith - DECISION • REJECTION 1 - Anticipation of claim 35. • The examiner made a prima facie case of anticipation by Michlin - that Michlin expressly or inherently shows all of the elements and limitations of claim 35. • The only issue is whether Michlin’s insert inherently could pass through a copier or printer.

  20. In re Smith - DECISION • REJECTION 1 - Anticipation of claim 35. • Appellant presented no evidence to overcome the examiner’s finding of inherent ability of Michlin’s insert to pass through a printer or copier. • Therefore, appellant failed to meet her burden of overcoming the prima facie case. • Claim 35 is anticipated.

  21. In re Smith - DECISION • REJECTION 2 - Obviousness of claims 1, 8 and 32. • This issue turns on whether it would have been obvious to improve a pocket insert by creating two pockets from a single pocket using an additional line of adhesive. • Our decision is guided by the Supreme Court decision in KSR v. Teleflex

  22. In re Smith - DECISION • REJECTION 2 • KSR emphasized the “need for caution in granting a patent bases on the combination of elements found in the prior art” • a “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”

  23. In re Smith - DECISION • REJECTION 2 • There is no “rigid formula” for obviousness, and requires the application of “common sense” • We agree with the examiner that claims 1, 8 and 32 are obvious over the combination of Dick and Wyant. It would have been obvious to use Wyant bonding method with Dick’s pocket insert.

  24. In re Smith - DECISION • REJECTION 2 • We find that: • each of the elements was known in the art • one of ordinary skill knew methods for making the modification • one of ordinary skill would have recognized that the functions or capabilities were predictable • nothing challenging or difficult

  25. In re Smith - DECISION • REJECTION 2 • We reject the assertion that the references teach away from each other. • In KSR the Court said that a “person of ordinary skill is also a person of ordinary creativity” • Appellant has presented no evidence that the modifications were challenging.

  26. In re Smith - DECISION • REJECTION 3 - Claim 36 • Appellant’s position on claim 36 is similar to her position about claim 35. • Each of the elements are known in the art and are used to perform the same function. • Thus, the combination would have yielded predictable results. • We find claim 36 obvious.

  27. In re Smith QUESTIONS? Thank you! Jack O’Brien, Hung Bui, David Schnapf, Don Studebaker, Darryl Webster, Naomi Voegtli

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